Hello and welcome to the Patent Pending Made Simple Podcast. I'm your host, Summer Shaw, and with me is Jamie Brophy. Jamie, how are you? Hey, Summer. I'm good. How are you? I am doing all right. I'm glad to be recording again. Yeah. I actually have a great topic for us today. This is a question that I brought up with you recently, and I thought it would be Cool to address it on here. I think it'll be good information for our listeners..
Yeah, I had a situation recently where we received a rejection from the patent office. As we've talked about on here many times before, that's completely normal to receive a rejection on your patent application. And I talked to my client about the rejection and I didn't think the rejection was that great. I thought we had some pretty good arguments to just, argue against the rejection without amending the claims.
In general, when you're responding to a rejection, those are the two paths you can take. You can amend the claims or you cannot amend the claims and just provide arguments against the rejections. So I was counseling my client that maybe we should just argue against these rejections and he thought that sounded great, but he was worried about. budget. He didn't want to have to deal with too many office actions because it was, costing him money each time we had to respond to an office action.
So when he mentioned I hope we don't have to go through this too many times. I said then maybe we should amend the claims. I think we'll get to allowance faster if we amend the claims. And I had some thoughts on how we could amend the claims to, get around the rejections. What do you think about that? How would you normally deal with that?
Yeah, that is a tough position to be in because there is you always want to, get an allowance as quickly as possible, but you also don't want to do it in a way that's going to limit your client's right, excuse me, and you don't want to do it in a way that's going to add cost to the prosecution process as well. So this is tough.
I think to answer this question appropriately, we have to step back and maybe talk about legal theory here for a couple of minutes which is going to drive a lot of our discussion, I think.
So the big thing with amending claims during prosecution is that there is a legal doctrine or legal theory called prosecution history estoppel, which says that Anything that you use to amend your claim is by definition, your, by definition is stopped from claiming that your claim or invention can capture equivalence of that and maybe to take another step here, Jamie, there is this legal doctrine called doctrine of equivalence, which says that you are entitled to it.
Protection over whatever your claims say but additionally you are entitled to protection around equivalence of those claim elements, right? So if somebody does the same thing as what you've stated in your claim, just maybe slightly differently or in a different, or they employ a different means to accomplish the same thing in the same way or in a different way, then those are all things that are covered under the doctrine of equivalence. It's a way for you to broaden the scope of your patent.
Under that legal theory, the second legal theory, the prosecution history, estoppel theory is a limit to the doctrine of equivalence. And it says that whatever you did to amend your claim, you can't turn around and claim equivalence of that thing. All right. So when you amend a claim, you had to submit a new underlying portion of your claims or a claim element. And basically what it means is when you submit that underlying portion, You can't get an equivalent of that thing.
You're limited to that thing pretty specifically or strictly. So that's really what we're thinking about when we're thinking about amending versus arguing. Did I do a good enough job here, Jamie, explaining some of the legal background here? Yeah, I think so. So I think if I'm understanding basically what you're saying, if you amend your claims by adding in a feature, then when it comes to when your patent issues, and then when it comes to infringement.
Somebody has to literally like word for word have that feature in their product to be infringing on your patent. Just the portion that you added when you amended the claims, is that kind of how it works? Yeah, I think so. And you did a much better job than I did, Jamie, but it's not word to word per se. The courts still have to construe the claims in litigation, so they have to define what these terms mean. And. And there is some leeway and latitude in terms of interpreting those words.
But yeah, you can't just, if somebody does that thing, but does it differently or in a different way, you can't, you can no longer go and get that infringement. So it sows you into that position from a claim interpretation or a breadth perspective down the road. Okay. Basically if you're amending the claims to get around some prior art and you add some features in your claim amendment because you added those to get around the prior art, you're there's a little fence around those added features.
You can't say doctrine of equivalence. This actually covers something, a little bit broader than what I've, literally stated here. So yeah, when you add a feature to get around a piece of prior art, you're you're limiting yourself as far as that feature goes. Is that right? That's right.
Yeah, the other way to think about it, or the logic behind this rule, is that when you amend your claims to overcome a piece of prior art or multiple pieces of prior art, you are basically admitting to the patent office that, hey, everything that's in my claim is actually disclosed in the prior art. But here's this one thing that is different, right? Or is not disclosed in the prior art, the new feature that you were talking about, Jamie.
And the logic is that you use this feature to get around the prior art. You can't just find equivalence of this feature to go find infringers, right? You can't just have your cake and eat it too. You can't say that I am different than the prior art because of this one feature, but now I'm going to go and assert infringement against all the equivalence of this feature. It doesn't work that way. That which does not.
Infringe cannot invalidate or I don't know the saying is like that, which cannot invalidate, cannot infringe something like that. So that's the logic is right is to prevent patentees from saying to, from one side of the mouth that they are different for this one reason. And then, on the other side of their mouth saying that, Hey, this difference is not actually important. Anything like this is infringing, that's. the legal doctrine is created to prevent. Okay, got it.
So you really want to try to avoid amending your claims as much as possible. But because of this prosecution history estoppel and doctrine of equivalence. But what about in my case? client's situation. They're also, budget conscious. They don't want to spend a ton of money on prosecuting the application. It would be beneficial to them to get a patent, as soon as possible. They're probably not even going to be enforcing their patent.
They're probably going to eventually just end up looking for someone to license their patent or buy it or something like that. Then, in that situation, would you go ahead and amend the claims instead of arguing? Yeah, there are a lot of practical considerations, which I'd like to get into in a second. But from my perspective, the number one consideration is whether this new feature that you're adding, whether it's going to be practiced by your competitors in that way.
So if you can look at that underlying portion or the new feature and say, yeah, I think about 80 or 90 percent of my competitors are going to do it this way, then I am not worried about adding that feature to overcome a rejection. But if you look at that newly added feature and you say, wow, only 10 percent of my competitors are going to do this or 20 percent or, it's unlikely that my competitors will do it this way.
I would say that counsels against making the amendment and it counsels towards making the argument. So that's the number one thing is, is this new thing that you're adding, is it going to be practiced by other people? And I think that should be the number one kind of guiding principle on this process.
To put it in different terms, Jamie, when I used to litigate patents and I was on the other side or on the defense of a patent lawsuit, my number one thing, the first thing that I would ever do in analyzing patents would be to look at the prosecution history, right? And look at the underlying portion. And I would just say, Are we not practicing any one of these underlying portions? And if I, if we did, I would build my entire case around that underlying portion, right?
That is the theory of my entire litigation defense. So it's it's really important, right? And it's something to be aware of. So that's the number one thing that I would say should be our guiding principle. When you're trying to make the decision, but there are other practical reasons as well, right? Cost is certainly one of them. The examiner that you're dealing with is another one. So there are a few other things that we can get into Jamie but what do you think about that?
Is that an appropriate kind of framework here? Yeah. Yeah, I think so. I think that's a good way to look at it. And we did take a look at that with my client, is this feature that we want to add to the claim. How likely is it that your competitors are going to do it this exact way? The feature that we were thinking about adding was definitely the most preferable way to, to practice the invention. A competitor could do it a different way, but it would be an inferior product.
So yeah, I think that's a good, that's a good consideration for sure. Okay, good.
And I guess this may be outside of the scope of this podcast, but there are some ways to potentially avoid Prosecution history estoppel or minimize its impact which you know is definitely an advanced kind of strategy stuff and May require you to file a continuation application or something like that but If you're in that place and you need to file an amendment for practical reasons, then maybe, maybe you should consider some of those other strategies to minimize the impact that prosecution
history estoppel can have on your case. Got it. Okay. Yeah I just lost my train of thought. No worries. Dennis or me will edit it out. Yeah, I totally forgot what I was going to say. No worries. I I can start and you can come in as you remember. Yeah. Okay, Jamie, so that's the number one consideration. The second consideration, I think, is the strength of your argument, right? And maybe related to that is how easy or difficult the examiner is to that kind of a conversation shall we say.
So I think the other thing to look at and weigh is how strong is your argument, right? If it's very strong then maybe that counsels towards making the argument and not an amendment. And then related to that is the examiner, right? So we can pull examiner statistics and see, how often do they allow a case, right? Do they have a high allowance rate or a low allowance rate? We can also look at how many times have they allowed a case with certain types of rejections.
We can even make granular as to their allowance rate with or without amendments. So that may be another factor to look at. Potentially having an examiner interview, I think is also another way to think about this. I sometimes use the examiner interview as a way to preview my arguments to the examiner or a way to preview their kind of response to those arguments, right?
And if they seem like they understand our position and our arguments, Then I would just go ahead and proceed with the argument, right? But if they're like no, there's no way you get, if you just can't see eye to eye in that interview or a conversation with the examiner, then maybe that counsels towards Making the amendment, but I maybe we can bucket those Additional factors as like getting more data about what your outcomes are going to be right?
based on the strength of the argument the examiners predisposition and willingness to listen to that argument and You can get some additional data points about what the outcomes going to be before you actually file the response Yeah, I think those are also great to take into consideration. I love doing interviews with the examiners because you really get a good feeling for how reasonable or unreasonable they're going to be.
But as far as the strength of your argument, I think it's been my experience that if you just submit arguments the examiner's not probably going to allow your case. You're probably going to get another rejection. And I would say. Most of the time. I don't think I've ever submitted just arguments, no amendments, and then gotten an allowance. I can't think of a single time that's happened. I will say I've had this happen.
A bunch of time, not a ton, but over the last two years, probably half a dozen times. And in each of those cases, the examiner was really far off, really off base with their rejection. Like it was very clear that they didn't understand the invention at all. Or they didn't understand the prior art.
So it just seemed very clear to me that they're just like throwing something together because they were, And under the gun on a deadline and they needed to make a rejection so in those cases I've not made any arguments and then the next thing I get back is a notice of allowance. So I think if the examiner is just completely wrong, way off base, then, now I think it, it may be worth it to take a shot at the argument because I have gotten allowances that way. Not very often though.
Okay. So you're saying when you've made arguments but not amendments. Okay. Yeah. Yeah. That does make sense. If they're way off base and, your argument is really strong, maybe that's just the difference between your, prosecution area and my prosecution area. It's hard to be way off base in, physical apparatus or mechanical arts, right? It's like this thing, it either, you is or works the same as this other thing, or it doesn't, right?
In the software side, there's a lot of room for interpretation. Okay. Yeah, that makes sense. Okay, so is there anything else you should take into consideration when you're determining whether to amend the claims or leave the claims as they are and just submit arguments? Yeah, the last set of considerations is what your overall strategy is going to be in the prosecution.
Sometimes we just know because the client has already charted out that path for you, or you've determined that's the only way to get something allowed is that you have to go to some higher authority than the examiner. So you're either going to have to, file a pre appeal brief to get a panel of reviewers to look at.
Look at the case or you need to file an appeal brief to get a judge at the patent office to take a look at this In those cases right if that's gonna be the only pathway to allow ability Then I would just file the arguments and I would try to set the case up for appeal that way Because we just know the examiner's being so unreasonable so unwilling to listen that And even extending an olive branch of an amendment is not going to do it for us.
They're just going to keep yanking you around and issue another rejection, do another search, and it's just going to be a never ending cycle. So in those cases, when I'm getting a case ready for appeal, I will make the argument as opposed to the amendment. Yeah, and that's something that, sometimes you can make that determination based on those examiner statistics you were talking about.
If this examiner has a really low allowance rate, or if you have an interview with the examiner and they're just, maybe If you're not combative or not willing to listen to your arguments, then, it's going to be best to proceed to appeal. That's really the only way to get your case in front of somebody else. You can't ask for a different examiner or anything like that. Sometimes you need your application to be reviewed by somebody else.
And that happens in the pre appeal and it happens during the appeal. And the appeal is really not that scary. It might sound scary, we do it frequently and it's really not that scary. Yeah. And we get really good outcomes from those appeals processes. So it's worth doing. And in some cases it may be even cheaper than, filing an amendment and then a subsequent RCE. So that's something to think about.
Sometimes I've been able to telegraph my intention to appeal to the examiner right in the interview. So if I present my case and the examiner is just not buying it or doesn't see it in See it that way at all, then I will sometimes try to phrase that conversation as I would think that an appeals judge would see it this way because of X, Y, and Z reasons. So I try to preview that or see the idea that, Hey, we're gonna.
appeal this thing if don't have a reasonable interpretation on this thing and that sometimes helps move the case forward as well. So you can telegraph your invention, or your intention, to the examiner to help move the case along. Yeah, I think that's a good strategy as well. The. Tough thing about appeal is that it just takes so long. You could be waiting a couple of years before you get a decision on your appeal. So you know, that's also something else to take into consideration. That's right.
It is. It does come with its downsides. I would say that a lot of times we get a disposition at the pre appeal brief stage. So the appeal process as has several. and oftentimes we get a reversal on the rejection of the pre appeal brief, which is, usually six to eight months from filing date. So that's nice. The other thing is that sometimes the client's not in a rush to get the ban allowed, right? They're more interested in, stopping the spend or the bleed on the prosecution.
In which case they're happy to say, yeah, this is going to be pending for a couple of years, but at least I'm not going to pay any fees over those couple of years, which may be preferable to having to pay, amendment and RCE fees in the near term. I think it's definitely worth talking to your client or to your attorney about this and see what makes sense, based on what you're ultimately going to do with the patent and the timeline of when you're going to do it. Yeah, that's a good point.
And you're still patent pending during that whole time. Yeah, I think it depends also, on the client's sort of business plan and what their strategies are with their, they might be willing to just let that application be pending for awhile, or it might be really important to them to get a patent, as soon as possible, regardless of what the claims say. So there's just there's a lot to take into consideration.
And. Yeah. Do you think we covered everything or is there more, are there more things we should mention? No, I think this is it. I yeah, I would agree with that. If the client wants to get a patent as soon as possible, then maybe make the amendment, make the best amendment that you can. And also setting their expectations for costs is also important, for those listening, setting your own expectations is also important.
And I have some examiners who just, you know, I will not allow a case until they get to an RCE, like it just doesn't matter. So I've had cases where I, make what I think are very reasonable amendments but it's not going to get allowed until it gets to an RCE. Or sometimes I make just arguments several times in a row and I don't get an allowance until I get to an RCE.
So there, there are some examiners out there who are just like not going to let you through until you go through a couple of rounds of this. Take that into consideration. The examiner statistics again are pretty helpful here. The data will show you, hey, this examiner, 90 percent of their cases allowed are after a first RCE or after a final rejection.
Then that kind of tells you that, hey, no matter, How much time and effort we put into this first one, we're still going to have to get to the second one before we get it allowed. Yeah good points. Yeah. So with my client that we were trying to determine what to do, we ended up just filing the arguments and, Lo and behold, we recently got a final rejection on it. So my client's trying to determine what they want to do next. So we'll see what happens.
I have a feeling we're going to have to go to appeal on this one, but but yeah, We'll see. So that's where we're at. But yeah, it was it was a whole thing going back and forth with the client on should we amend? Should we argue? What are the benefits of this and the benefits for that? Yeah, it's a lot to take into account. It is a lot. And yeah it's, as I am sure the listeners can now appreciate, hopefully it's not a straightforward decision. It's complicated.
And you can second guess yourself a bunch of times. But yeah, that's an unfortunate situation with your client, Jamie. It's tough. One of the best things that I think we can do and that the listeners can do is to, Set your expectations at least two rounds of rejection with the patent office from a budget perspective. I think that's maybe the most helpful thing because you wouldn't believe it.
There are so many cases where I was like, I am so right and I didn't get an allowance until I got to the final rejection or until I filed the RCE and paid those fees, which is painful for the client. But that's just how it is sometimes. Yeah. Oh, man. All right. I think we covered everything, Summer. Unless you have anything to add, I will talk to you next time. Yeah. That sounds good. This was very fun, Jamie. Thanks for the question. I hope this helps and yeah, we'll talk on the next one.